To: | Miller, Richard C. (cbanti@andersonzeigler.com) |
Subject: | TRADEMARK REGISTRATION NO. 3464978 - INTEGRATIVE RESTORATION - T-36452-A |
Sent: | 09/12/18 09:37:05 AM |
Sent As: | PRG@uspto.gov |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT OWNER’S TRADEMARK REGISTRATION
U.S. REGISTRATION NO. 3464978
OWNER: Miller, Richard C.
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CORRESPONDENT’S ADDRESS: |
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MARK: INTEGRATIVE RESTORATION
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CORRESPONDENT’S REFERENCE/DOCKET NO. T-36452-A
CORRESPONDENT’S EMAIL ADDRESS: |
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CLICK ON THE LINK BELOW TO RESPOND TO THIS LETTER AND SELECT FORM NUMBER 11:
http://www.gov.uspto.report/trademarks/teas/reg_maintain.jsp
ISSUE/MAILING DATE: 9/12/2018
U.S. Registration Number: 3464978
The Combined Section 8 Affidavit & Section 9 Renewal Application was received on July 11, 2018. The Section 9 portion of the combined filing can be granted. However, the Section 8 portion is not accepted for the reason(s) set forth below.
I. Specimen Deficiencies For Both International class 009 and 041
Specifically, the specimen consists of a mailing box with a name and address and design and is unacceptable as evidence of actual trademark use because the mark, as it appears on the specimen, is used only as a trade name to identify the owner’s business. Although a designation may function as both a trade name and a trademark, a specimen is unacceptable if it shows use of a mark solely as a trade name. See In re Supply Guys, Inc., 85 USPQ2d 1488, 1491 (TTAB 2008); In re Diamond Hill Farms, 32 USPQ2d 1383, 1384 (TTAB 1994); TMEP §1202.01.
The specimen cannot be accepted because the character of the registered mark appears materially altered on the submitted specimen, and it appears that the registered mark is no longer in use. In re International Nickel Co., Inc., 282 F.2d 952, 127 USPQ 331 (C.C.P.A. 1960); In re Continental Distilling Corp., 254 F.2d 139, 117 USPQ 300 (C.C.P.A. 1958); Ex parte Richards, 153 USPQ 853 (Comm’r Pats. 1967); see TMEP §§807.14 et seq., 1604.13, 1609.02(a).
A specimen for a service mark must show use of the mark “in the sale or advertising of services.” See Trademark Act Section 45, 15 U.S.C. §1127; 37 C.F.R. §2.56(b)(2). Specimens for service marks must show an association between the mark and the services identified in the registration. In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997). If the specimen does not show the mark with reference to, or association with, the services, the specimen fails to show service mark usage. See In re DSM Pharms., Inc., 87 USPQ2d 1623, 1625-26 (TTAB 2008).
Therefore, the owner must submit the following:
(1) A substitute specimen showing current use of the registered mark in commerce for each class of services specified in the registration; and
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce during the relevant period for filing the 10-year Section 8.” 37 C.F.R. §2.161(g); TMEP §1604.12(c).
Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services. See TMEP §§1301.04 et seq.
II. Sample Declaration
The owner was using the mark in commerce on or in connection with the goods and/or services identified in the registration for which use of the mark in commerce is claimed, as evidenced by the submitted specimen, during the relevant period for filing the 10-year Section 8.
The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statement may jeopardize the validity of this document, declares that s/he is properly authorized to execute this document on behalf of the owner, and all statements made of his/her own knowledge are true and that all statements made on information and belief are believed to be true.
__________________________
Signature of Authorized Person
__________________________
Type or Print Name
__________________________
Date
III. Authorized Signatories
The following persons are properly authorized to sign a Section 8 Affidavit on behalf of the owner:
(1) A person with legal authority to bind the owner (e.g., a corporate officer or general partner);
(2) A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner; or
(3) An authorized attorney who has an actual written or verbal power of attorney or an implied power of attorney from the owner.
37 C.F.R. §§2.161(b), 2.193(e)(1); TMEP §1604.08(a).
IV. Response Period
DEFICIENCY SURCHARGE REQUIRED: The owner must submit a $100 deficiency surcharge with its response to this Office action if the response is submitted online using the Trademark Electronic Application System (“TEAS”). A $200 deficiency surcharge must be submitted if the response is submitted on paper. 37 C.F.R. §§2.6, 2.164(a)(1); TMEP §1604.17(a).
/Ajay R. David/
Ajay R. David
Trademark Specialist
Post Registration Division
Phone: 571-272-1565
Fax No: 571-273-1565
Email: ajay.david@uspto.gov
Mandatory Electronic Filing Rules Advisory
The USPTO proposes to change federal trademark rules to require applicants and registrants to (1) file submissions concerning applications and registrations online using the USPTO’s Trademark Electronic Application System (TEAS) and (2) provide and maintain an accurate email address for receiving correspondence from the USPTO. See the Mandatory Electronic Filing Rules webpage for more information.
TO RESPOND TO THIS LETTER: Use the Trademark Electronic Application System (TEAS) Response to Post-Registration Office action form number 11 at http://www.gov.uspto.report/trademarks/teas/reg_maintain.jsp. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the registration. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned specialist. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this registration will be placed in the official registration record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual owner or someone with legal authority to bind an owner (i.e., a corporate officer, a general partner, all joint owners). If an owner is represented by an attorney, the attorney must sign the response.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.